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Trademark Infringement 5/26/2009 9:41:17 AM EST Anne Gilson LaLonde on Rescuecom v. Google and the Meaning of "Use in Commerce" Author, Gilson on Trademarks
In Rescuecom Corp. v. Google, Inc., 562 F.3d 123 (2d Cir. N.Y. 2009), the Second Circuit held that Google had used Rescuecom’s trademark in commerce when it recommended and sold the mark as a keyword to Rescuecom’s competitors. In this Commentary, Anne Gilson LaLonde explains the facts and holding of Rescuecom in the context of other keyword buy cases, discusses the legal issues underlying such cases, and explores definitions of "use in commerce." She writes:
Outside of the Second Circuit, courts had generally held that keyword buys of a mark were uses of that mark in commerce. After Rescuecom, this view is decidedly the majority view. The Second Circuit's opinion in 1-800 Contacts [v. WhenU.com, Inc., 414 F.3d 400 (2d Cir. N.Y. 2005)], apparently to the contrary, has been severely undermined by Rescuecom. Its holding is now limited to cases in which the plaintiff's trademark was in fact never used in any way by the defendant, but where the plaintiff's web site address was the only trigger for the Internet advertising. In addition, under Rescuecom, use of a trademark in an internal software program that causes consumer confusion may constitute infringement even though that use was purely internal.
The Rescuecom court emphasizes that Google displays, offers, and sells Rescuecom's trademark to its advertising customers and encourages the purchase of the RESCUECOM mark using its Keyword Suggestion Tool. These actions, according to the court, constitute use in commerce. Google's sale and offering for sale of a mark does appear to fit literally within the Lanham Act infringement requirement of use. Here, Google used the plaintiff's registered mark in commerce in connection with the sale, offering for sale, . . . or advertising of any . . . services. It also used the mark on or in connection with any . . . services.
(citations omitted)
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